Wednesday, November 10, 2010

Fraud and Lack of Bona Fide Intent: Some Thoughts on Remedies

I am participating as a panelist this afternoon in a webinar program on fraud (here), and so I thought this would be a good time to revisit the issue of remedies. In a June 11, 2010 TTABlog posting (here), I set forth my understanding of the differing remedies available under a fraud theory, a lack-of-bona-fide-intent theory, and a non-use theory. A number of readers followed up with comments.

In that posting I asked this question: "What about alleging that an Applicant's or Registrant's lack of bona fide intent amounts to fraud? Why not?" Well, if the Applicant lacked a bona fide intent for ALL the goods or services, then there is no reason to pursue both the lack-of-intent claim and th efraud claim, since the remedy would be the same: the application or registration would be void ab initio. IIn that regard, the Board made the following observation at footnote 9 in E.&J. Gallo Winery v. Quala S.A., Opposition No. 91186763 (November 7, 2009) [not precedential].

[O]pposer could not prove its claim of fraud without first proving that the asserted bona fide intent to use was not in fact bona fide, i.e., it was false. However, having proved such threshold matter, opposer would be entitled to a judgment on a claim of lack of bona fide intent to use and there would be no need to proceed to attempt to prove intention to deceive. Since the fraud claim in this case therefore may be viewed as superfluous, we see no point in opposer pursuing this claim at trial. *** Trial of a fraud claim over and above trial of the asserted issue of lack of bona fide intent to use the mark would be a waste of the parties’ resources and those of the Board.

But what about the case where the lack of bona fide intent applies to fewer than all the goods and services? Then it might be worth claiming fraud in order to knock out the entire application or registration.